DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The response filed 17 April 2026 has been entered.
Claims 1-4 remain pending in the application, wherein none of the claims have been amended.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haishi et al. (WO 2019/117112, previously cited, using US 2021/0172897, previously cited, as an equivalent English translation).
Claim 1: Haishi teaches an electrode film including a flexible substrate and an electrically conductive carbon layer disposed at one side (i.e. in this order) in the thickness direction (paragraph 0010). The flexible substrate has a film shape and the material more preferably is a polyester resin (i.e. a resin film) (paragraph 0025). The electrically conductive carbon layer is formed from carbon having an sp2 bond and an sp3 bond (paragraph 0049).
Haishi does not specifically teach the instantly claimed thermal shrinkage. However, this feature is a material property. Haishi teaches the ratio of sp3/sp2 is 0.05 or more and 2.00 or less (paragraph 0050) (i.e. recalculated as a ratio of sp3 to a sum of sp3 and sp2 which is about 0.33 to 0.95). The electrically conductive carbon layer has a thickness of 1 nm or more and 500 nm or less, preferably 100 nm or less, more preferably 50 nm or less (paragraph 0052) and is deposited preferably using a sputtering method from a target material of carbon with inert gas and under an atmospheric pressure of 1 Pa or less at a temperature of 200°C or less, more preferably 70°C or less (paragraphs 0074-0079). This compares to the instant disclosure of the ratio (sp3/sp3+sp2) is 0.10 or more and for example 0.9 or less (paragraphs 0028-0029 of the instant specification), having a thickness of 0.1 nm or more and 100 nm or less (paragraph 0033 of the instant specification), and deposited preferably using a sputtering method from a target of carbon with inert gas at a pressure of 1 Pa or less and a temperature of for example 150°C or less (paragraphs 0040-0042 of the instant specification) Each of these conditions and features of the conductive carbon film taught by Haishi substantially overlaps the conditions and features of the conductive carbon film of the instant application. Therefore, the material properties recited in the instant claim(s) are considered to be present because substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01.
Claim 2: Haishi teaches the ratio of sp3/sp2 is 0.05 or more and 2.00 or less (paragraph 0050) (i.e. recalculated as a ratio of sp3 to a sum of sp3 and sp2 which is about 0.33 to 0.95), which lies within the instantly claimed range. See MPEP § 2131.03.
Claims 3-4: Haishi does not specifically teach the density of the conductive carbon layer. However, the density is a property resulting from the material and the manner of treatment. In this regard, Haishi teaches substantially identical conditions and features of the conductive carbon film compared to the conductive carbon film of the instant application, as outlined above regarding claim 1. Therefore, the material property of density is considered to be present because substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01.
Double Patenting
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/914,441 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Instant claim 1 and claim 1 of the ‘441 application both recite an electrode comprising a resin film and a conductive carbon layer in order in a thickness direction and the conductive carbon layer having an sp3 bond.
Instant claim 1 differs from claim 1 of the ‘441 application insofar as reciting a thermal shrinkage. However, this limitation is a material property. In this respect, the ‘441 application discloses that a ratio of the number of sp3-bonded atoms to the sum of the number of sp3-bonded atoms and the number of sp2-bonded atoms is 0.25 or more (paragraph 0007) and a thickness of the conductive carbon layer is 0.2 nm or more and 50 nm or less (paragraph 0009) formed by a dry method, preferably sputtering, from a sintered carbon target in sputtering gas that includes inert gas at a pressure of 1 Pa or less and a forming temperature of 100°C (paragraphs 0040-0042). This disclosure compares to the instant application of a ratio of the number of sp3-bonded atoms to the sum of the number of sp3-bonded atoms and the number of sp2-bonded atoms is 0.10 or more (paragraph 0007 of the instant specification) and a thickness of the conductive carbon layer is 0.1 nm or more, preferably 0.2 nm or more, and 100 nm or less, preferably 50 nm or less (paragraph 0033 of the instant specification) formed by a dry method, preferably sputtering, from a sintered carbon target in sputtering gas that includes inert gas at a pressure of 1 Pa or less and a forming temperature of 150°C (paragraphs 0040-0042 of the instant specification). Each of these ranges of the ‘441 application regarding the conductive carbon layer lies within the ranges of the instant application, and therefore the conductive carbon layer is considered to be substantially identical materials. Furthermore, the ‘441 application discloses the material for the resin film to be preferably polyester resins, more preferably polyethylene terephthalate, and having a thickness of 2 µm or more and 1000 µm or less (paragraphs 0018-0019), which compares to the instant disclosure of the material for the resin film being preferably polyester resin, more preferably polyethylene terephthalate, and having a thickness of 2 µm or more and 1000 µm or less (paragraphs 0018-0019 of the instant specification). Since the materials of the electrode of the ‘441 application is substantially identical to the materials of the electrode of the instant application, the instantly claimed thermal shrinkage is considered to be present because substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01. Accordingly, the instantly claimed electrode is not patentably distinct from the electrode of the ‘441 application.
Instant claim 2 recites the conductive carbon layer has an sp2 bond and a ratio of the number of sp3 bonded atoms to a sum of the number of sp3 bonded atoms and the number of sp2 bonded atoms is 0.10 or more, whereas claim 1 of the ‘441 application recites this ratio is 0.25 or more and 0.40 or less, which lies within the instantly claimed range. See MPEP § 2131.03.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments, filed 17 April 2026, have been fully considered but they are not persuasive for the following reasons:
Applicant argues, see p. 3-4, that the instantly claimed thermal shrinkage requires a specific heating step of the resin film prior to forming the conductive carbon layer outlined in paragraphs 0037-0038 of the instant specification as evidenced by Comparative Examples 1-3 in which a heating step was not performed. Paragraph 0038 of the instant specification outlines heat of the resin film at a temperature of 70°C or more and 200°C or less for a period of time of 5 minutes or more at normal or reduced pressure and in air or inert gas. However, as outlined in the Office Action mailed 20 January 2026 and above, Haishi teaches depositing the carbon layer by sputtering with inert gas under an atmospheric pressure or less at a temperature of 200°C or less (paragraphs 0074-0079). This elevated temperature (i.e. above room temperature) would necessarily require heating the substrate (i.e. the resin film), typically prior to deposition so as to be in thermal equilibrium with the deposition temperature. Notedly, Haishi discloses setting the temperature of the substrate for depositing the metal layer and subsequently depositing the carbon layer (i.e. the substrate is heated before depositing the carbon layer) (paragraphs 0061-0066 and 0100).
Applicant points to Comparative Examples 1-3, see p. 4, as evidence of the pre-heating step being necessary to obtain the instantly claimed range of thermal shrinkage. However, the instant specification outlines that sputtering may be carried out at a temperature of 0°C for example (paragraph 0042 of the instant specification). Comparative Example 1 was produced in the same manner as Example 1 but without carrying out the second step (i.e. the heating step) (paragraph 0072), and Example 1 was sputtered at “120°C or less” (paragraph 0063). Notedly, the disclosure of “or less” and lacking a heating step indicates that the sputtering temperature could be at a much lower temperature, such as room temperature or as low as 0°C as outlined in paragraph 0042 of the instant specification. Comparative Examples 2 and 3 were similarly produced in the same manner as Examples 3 and 4, respectively, but also without the second step (.e. the heating step) (paragraphs 0073-0074 of the instant specification). These examples likewise use a sputtering temperature of “120°C or less” being in the same manner as Example 1 (paragraphs 0067-0070).
It is noted that the limitation of “a thermal shrinkage of the electrode is -0.2% or more and 0.2% or less when the electrode is heated at 150°C for 1 hour” does not actually require the thermal shrinkage to be present and the heating to occur since the limitation specifies the thermal shrinkage “when the electrode is heated” as recited. That is, one of ordinary skill in the art is not required ever to heat the electrode as recited.
Applicant’s request, see p. 5, of remarks filed 17 April 2026, to hold the nonstatutory double patenting rejection in abeyance is acknowledged. However, the nonstatutory double patenting rejection is still considered proper and therefore is maintained. See MPEP § 804(I)(B)(1).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784
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